Hussein Akhavannik

Partner

Washington, D.C.
T +1.202.861.1642
F +1.202.861.1783

Overview

Hussein Akhavannik focuses his practice on patent prosecution and portfolio management. He prosecutes patent applications in technologies related to the electrical, computer, medical and mechanical arts. Hussein spent almost four years at the U.S. Patent and Trademark Office (USPTO), as a patent examiner and as a legal intern for the Patent Trial and Appeal Board and the Office of the Solicitor. He leverages his understanding of the inner workings of the USPTO, his technical background in electrical and biomedical engineering, and his clients' objectives to develop creative solutions for clients in a cost-effective manner.

Select Experience

  • Performs intellectual property due diligence for mergers and acquisitions. Recently assisted in the purchase of a large medical device corporation by examining the portfolio of the corporation to identify its strengths and weaknesses. Also analyzed the intellectual property landscape of the corporation's technology to predict risks for the purchaser and developed strategies to protect against potential future disputes.
  • Performs post-grant proceedings in the software, hardware and medical device industries, ensuring that any changes to the patent claims retain protection for clients' products while maintaining the patents with the USPTO. Recently completed a reissue in the home automation industry. 
More »

Experience

  • Performs intellectual property due diligence for mergers and acquisitions. Recently assisted in the purchase of a large medical device corporation by examining the portfolio of the corporation to identify its strengths and weaknesses. Also analyzed the intellectual property landscape of the corporation's technology to predict risks for the purchaser and developed strategies to protect against potential future disputes.
  • Performs post-grant proceedings in the software, hardware and medical device industries, ensuring that any changes to the patent claims retain protection for clients' products while maintaining the patents with the USPTO. Recently completed a reissue in the home automation industry. 
  • Performs freedom-to-operate analyses for a variety of medical devices, software algorithms and hardware devices. In addition to utilizing third-party searching, leverages USPTO experience to perform internal searches as part of the freedom-to-operate analysis. Uses the analysis as a basis to work with engineers on design changes as necessary.
  • Develops patent portfolios for clients by drafting and prosecuting patent applications in the USPTO, ensuring that each patent application creates value and that their claims are structured to protect against simple design-arounds by competitors. 
    • Developing a patent portfolio for an international pharmaceutical company covering chemical containers.
    • Developing several patent portfolios for an international aerospace corporation covering flight systems, including semiconductor chips and flight control algorithms.
    • Developing a patent portfolio for a start-up corporation covering automated parking systems.

Recognitions and Memberships

Recognitions

  • Washington, D.C., Super Lawyers "Rising Star" (2017)

Memberships

  • American Intellectual Property Lawyers Association

News

Press Releases

Publications

Alerts

Pro Bono

  • Represents juveniles in the United States without parents and develops strategies that allow those clients to remain in the U.S. and obtain Special Immigrant Juvenile status.

Emerging Issues

Prior Positions

  • U.S. Patent and Trademark Office: Patent Examiner
  • USPTO Patent Trial and Appeal Board: Legal Intern
  • USPTO Office of the Solicitor: Legal Intern
  • U.S. International Trade Commission Office of Unfair Important Investigations: Legal Intern

Admissions

  • U.S. Patent and Trademark Office, Registration No. 59,347
  • Virginia
  • District of Columbia

Education

  • J.D., The George Washington University Law School, 2007, with honors
  • M.S., Electrical and Computer Engineering, Johns Hopkins University, 2004
  • B.S., Biomedical Engineering, Electrical Engineering, Johns Hopkins University, 2002, with general and departmental honors

Languages

  • Farsi